Article 10.1.8 of the Trademark Law of the People’s Republic of China (hereinafter referred to as the Trademark Law) seems to have always been a quite controversial provision. The Trademark Office of the People’s Republic of China (hereinafter referred to as the Trademark Office), the Trademark Review & Adjudication Board of the People’s Republic of China (hereinafter referred to as the Trademark Review & Adjudication Board) “seem” to have different criteria for applying the provision. Relative to the Trademark Office and the Trademark Review & Adjudication Board, the people’s courts “seem” to hold a more prudent attitude toward the application of the same provision, that is, Article 10.1.8 of the Trademark Law is strictly limited to maintaining the public order instead of protecting the rights and interests of certain civil subjects. How to apply Article 10.1.8 of the Trademark Law on earth? This paper tries to start with the refusal of trademark “阿森纳” (the Chinese translation for Arsenal) to express opinions on the application of Article 10.1.8 of the Trademark Law.

I. A Brief Introduction to the cases of Trademark “阿森纳” (the Chinese translation for Arsenal) and other Trademarks

The applicant of trademark No. 4833162 “阿森纳” (Chinese translation of Arsenal) is “Jin Ren’ai”, an individual from Zhejiang Province, China. The Trademark Office refused the registration of the trademark pursuant to Article 10.1.8 of the Trademark Law based on the ground that the trademark would be likely to mislead consumers into mistaking the owner of the trademark for the well-known “Arsenal Football Club” and thus to cause unhealthy social influences..

The author, as the entrusted representative for a top-class European football team, once raised opposition review application against a trademark identical with the name of the football team. At the end of 2014, the author received the decision on the trademark opposition review (the trademark information is not disclosed here for protection of the customer’s commercial information) in which the Trademark Review and Adjudication Board refused the registration of the opposed trademark, saying that registration and use of the opposed trademark are likely to mislead the consumers into believing that the commodities come from the well-known European football club and thus to give rise to unhealthy social influences, and that the opposed trademark shall not be approved for registration pursuant to the provisions in Article 10.1.8 of the Trademark Law,

II. A brief introduction to the case of administrative dispute over trademark “中超” (“China Super League” in Chinese)

In mid 2011, No. 1 Intermediate People’s Court of Beijing Municipality ruled a case similar to the above case that I represented. Briefly,

Chinese Football Association applied to the Trademark Office and the Trademark Review & Adjudication Board for objecting trademark “中超”(“China Super League” in Chinese) (hereinafter referred to the opposed trademark) that was applied for registration by Zhou Jun and Yan Zhenyu for use on wines, but neither the Trademark Office nor the Trademark Review & Adjudication Board supported the opponent’s claims. After trying the case, No. 1 Intermediate People’s Court of Beijing Municipality found that “中超” (China Super League in Chinese) is the abbreviation form of “中国足球协会超级联赛 (Chinese Football Association Super League)”, and was developed by Chinese Football Association according to the league matches of countries where football is developed and the reality of football league matches in China. As the highest level football league in China, “中超” (China Super League in Chinese) established an exclusive correspondence with Chinese Football Association in the public concerned. The identifying part of the opposed trademark was “中超” (China Super League in Chinese) which did not have other meanings than “中超” (China Super League in Chinese) Chinese super league. Therefore, the registration of the opposed trademark for use on wines of Class 33 by Zhou Jun and Yan Zhenyu would easily mislead the public concerned into thinking that the goods using the opposed trademark came from Chinese Football Association or were somewhat associated with it, which would cause misidentification of the source of the goods and produce adverse influence. The court ruled to revoke the sued ruling and ordered the Trademark Review & Adjudication Board to anew their rulings on trademark opposition review of the two opposed trademarks.

III. How to understand the application of Article 10.1.8 of the Trademark Law?

1.Application status of Article 10.1.8 of the Trademark Law

(1)Practice of the Trademark Office and the Trademark Review & Adjudication Board

As rush registration of trademarks in bad faith is becoming an increasingly serious problem, faced with the growing number of cases of rush registration of trademarks in bad faith and of purposefully seeking connections with well-known trademarks, the Trademark Office and the Trademark Review & Adjudication Board apply Article 10.1.8 of the Trademark Law in the absence of other applicable legal provisions. For example,

●Where the designated goods of a prior cited trademark are relevant to the designated goods of the disputed trademark, but are not similar to the latter according to the goods classification table, and the prior cited trademark is not enough to constitute any well-known trademark, the Trademark Office and the Trademark Review & Adjudication Board would quote Article 10.1.8 of the Trademark Law to rule that the registration of the opposed trademark would cause market confusion and adverse influences. For example, in the case of opposition against the registration of trademark No. 5622580 “劳斯莱斯” (“ROLLS ROYCE” in Chinese), the Trademark Office held that the designated use of the opposed trademark on “plastic food decorations” would easily mislead the public and cause adverse social influences (in this case, the designated goods of the opponent’s prior trademark are dissimilar to those of the opposed trademark), so the opposed trademark was rejected registration according to Article 10.1.8 of the Trademark Law.

●Where the owner of the disputed trademark plagiarizes a lot of other parties’ trademarks, the Trademark Office and the Trademark Review & Adjudication Board would quote Article 10.1.8 of the Trademark Law to rule that the registration of the opposed trademark would have adverse social influences. For example, in the case of opposition against trademark No. 4149507 “劳斯•莱斯ROUSIREISI & Device”, the Trademark Office and the Trademark Review & Adjudication Board held that the opposed party violated the principle of good faith by registering a large number of other parties’ well-known trademarks, which would cause adverse influences, so the opposed trademark should not be approved of registration in accordance with Article 10.1.8 of the Trademark Law.

●Where the opponent does not make any prior application for registering or prior registered trademarks, the Trademark Office and the Trademark Review & Adjudication Board would quote Article 10.1.8 of the Trademark Law to rule that the disputed trademark would easily mislead the public concerned into thinking that its goods come from the opponent or is related to the opponent, and then confuse or misidentify the source of such goods. The above case of trademark “阿森纳” and the case of opposition review that the author represented are some examples of such cases.

(2)Practice of the people’s courts

Chinese courts usually limits Article 10.1.8 of the Trademark Law strictly to protecting the public interests and the public order. Of the above three circumstances under which the Trademark Office and the Trademark Review & Adjudication Board apply Article 10.1.8 of the Trademark Law, the first circumstance generally will not be taken into consideration by the people’s court. In practice, the people’s court once quoted Article 10.1.8 of the Trademark Law to reject the registration of the disputed trademark in the following types of cases

●Where the owner of the disputed trademark plagiarizes a lot of other parties’ trademarks, the people’s court would quote Article 10.1.8 of the Trademark Law to rule that the registration of the opposed trademark would have adverse social influences. For example, in the case of opposition against trademark No. 4149507 “劳斯•莱斯ROUSIREISI & Device” and the following case of opposition review, both the first-instance and the second-instance courts held that the third party (the opposed party) violated the principle of good faith by registering other parties’ well-known trademarks, which objectively damaged the trademark registration system. According to the provision of Article 10.1.8 of the Trademark Law, the people’s courts sustained the ruling made by the Trademark Review & Adjudication Board and rejected the registration of the opposed trademark.

●Where the opponent does not make any prior application for registering or prior registered trademarks, the people’s court would quote Article 10.1.8 of the Trademark Law to rule that the disputed trademark would easily mislead the public concerned into thinking that its goods come from the opponent or is related to the opponent, and then confuse or misidentify the source of such goods. The above administrative case of “中超”is one of such cases.

2. Determination of the nature scope of application and application criteria of Article 10.1.8 of the Trademark Law

Concerning the circumstances where Article 10.1.8 of the Trademark Law is applicable in practice, the author believes it to be extremely important to determine the nature (Is it for protecting the rights and interests of certain civil subjects, or is it for protecting the public interests?), the scope of application and application criteria of Article 10.1.8 of the Trademark Law.

The Supreme People’s Court has clearly provided it in Opinion of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving the Authorization and Determination of Trademark Rights, “In judging whether a mark has any other adverse effect, a people’s court shall consider whether the mark or any of its elements is possible to cause any negative effect on political, economic, cultural, religious, ethnic and other public interests or the public order. If a mark would only damage certain civil rights and interests after it is registered, since the Trademark Law has provided the remedy measures and the corresponding procedures, it is not appropriate to decide that the mark has any other adverse effect.”

As can be seen, Article 10.1.8 of the Trademark Law protects the public interests and the public order instead of certain civil rights and interests, which can also be demonstrated in the legislative arrangement of the Trademark Law: Article 44 of the Trademark Law views Article 10 and Articles 11 and 12 as terms of absolute grounds for invalidation; Article 45 views Articles 13, 15, 16, 30, 31 and 32 as terms of relative grounds for invalidation. Article 10.1.8 of the Trademark Law, being a term of absolute grounds, will surely protect the public interests and the public order.

3.Application of Article 10.1.8 of the Trademark Law to the cases of “阿森纳” (the Chinese translation for ARSENAL) and “中超 ”(China Super League in Chinese)

If Article 10.1.8 of the Trademark Law protects “the public interests and the public order”, how to understand the refusal decisions/rulings/judgments ruled by all the Trademark Office, the Trademark Review & Adjudication Board, and the people’s courts in the above cases that the opposed trademarks “would easily mislead the public concerned into thinking that the goods using the disputed trademark come from the opponent’s football team or football organization, which will cause the public concerned to misidentify the source of the goods and produce adverse influences”? On the surface, such decisions/rulings/judgments seem to have broken through the scope of “public interests” protected by Article 10.1.8 of the Trademark Law, but in fact they happen to be typical cases of making sufficient use of the legislative intent of Article 10.1.8 of the Trademark Law. The following is an analysis.

(1)Cases “阿森纳” (the Chinese translation for ARSENAL) and “中超” (China Super League in Chinese) conform to the circumstances set in Trademark Examination and Trial Standards under which Article 10.1.8 of the Trademark Law is applicable.

As provided in Trademark Examination and Trial Standards which was developed by the Trademark Office and the Trademark Review & Adjudication Board, the circumstances “detrimental to socialist morals or customs, or having other unhealthy influences” specified in Article 10.1.8 of the Trademark law include “where the trademark is made up of a company name or comprises a company name, and such name is substantially different from the applicant’s name, thus would easily cause the public concerned to misidentify the source of the goods or services.” It is further explained in the Trademark Examination and Trial Standards, “Company name here includes the full name, the abbreviation, the Chinese name, the English name and Chinese Pinyin of the name.”

In the above cases, “阿森纳” (the Chinese translation for ARSENAL) and “中超” (China Super League in Chinese) are respectively owned and controlled by foreign and famous Chinese football teams. For the Chinese consumers, “阿森纳” (the Chinese translation for ARSENAL) and “中超” (China Super League in Chinese) are closely associated with, and equivalent to, the “Arsenal football team” and “Chinese Football Association Super League”. The applicants of the two trademarks are both Chinese individuals, substantially different from the football teams of “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese). Seeing the trademarks of “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese), the consumers would naturally think that “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese) football teams provide the goods and services using such trademarks, and then misidentify the source of such goods or services and cause adverse influences. The above decisions and cases are ruled on the recognition degree of “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese) by the Chinese public concerned, so they conform to the provision of the Trademark Examination and Adjudication Standards on the circumstances under which Article 10.1.8 of the Trademark Law is applicable.

(2) Interpretation of Article 10.1.8 of the Trademark Law in the Opinion of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving the Authorization and Determination of Trademark Rights in the cases of “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese)

Opinion of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving the Authorization and Determination of Trademark Rights focuses on the negative and passive influence of the disputed trademark on the public interests and the public order.

“阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese), being names of football teams that are famous in China, even around the globe, have extensive supporters and a considerable number of fans in China. They have gone beyond certain civil rights and interests enjoyed by their respective owners, and had the functions that are different from general commercial logos (to indicate the source of goods/services). The names of famous football teams like “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese) represent football culture, football spirit, even sports feelings. In some sense, they have entered the public domain. If the names of the famous football teams like “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese) are allowed to be registered at will, they would mislead the consumers into thinking that such goods are relevant to the football teams they love. Based on such love for such football teams, the consumers would channel the same preference and good feelings into the goods of the opposed trademarks, thinking that such goods are from the football teams they love. Such trust- and favor-based wrong identification and dependence which would involve fairly extensive public concerned will surely have negative and passive impacts on the public interests and the public order. In such sense, the above two cases followed the interpretation of Article 10.1.8 of the Trademark Law by the Supreme People’s Court in the Opinion of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving the Authorization and Determination of Trademark Rights.

(3) Cases of “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese) conform to the principle of “fairness, order, and justice”.

The understanding of the law can’t be separated from the principle of “fairness, order and justice”. It is impossible that applicants of the trademarks in the above cases of “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese) did not know football teams of “阿森纳” (Chinese translation of Arsenal) and CSL which are known to the public. These trademarks are obviously seeking connection with the names of famous football teams, and attempting to confuse the consumers. If they are allowed to registered at will, it would be a trample upon fairness, order, and justice.

(4) The cases of “阿森纳” (Chinese translation of Arsenal) and “中超”(China Super League in Chinese) demonstrate the circumstance where “public interests” and “relative private rights” overlap .

The main disputed point of Article 10.1.8 of the Trademark Law is how big is the scope of trademark protection? How to define “public order” and “relative private rights”? Under normal circumstances, “public interests” and “relative private rights” are clearly distinctive, but under some circumstances, “relative private rights” may change into or overlap with “public interests”. The above two cases in this paper would be examples. “阿森纳” (Chinese translation of Arsenal) and “中超” (China Super League in Chinese) are “private rights” of the football teams’ trademarks, but as they are used and have become far more influential than they should be in their original fields, even become a part of the interests and feelings of the public, they have begun to enter the domain of “public interests.” Unauthorized use of such logos will harm not only the trademark owners’ interests, but also the collective interest of the general public. It conforms to legal provisions and requirements to quote Article 10.1.8 of the Trademark Law to reject the registration of the above trademarks.

IV. Conclusion                  

So far, Article 10.1.8 of the Trademark Law protects public order and public interests, which has become a common understanding of the Trademark Office, the Trademark Review & Adjudication Board and people’s courts. After the implementation of the new Trademark Law, it has become improper to apply Article 10.1.8 of the Trademark Law to such circumstance where “the designated goods of the prior cited trademark are relevant to those of the disputed trademark, but both are dissimilar according to the goods classification list.” Articles 13 and 15 of the new Trademark Law may be applied to solving such cases.

All in all, only when it’s truly necessary to give protection to trademarks that have entered the domain of public order is it possible to apply Article 10.1.8 of the Trademark Law. It is not true that “relative private rights” and “the public order” are “never in contact with each other.” How far is a “relative private right” become from “public order”? It depends on the social influence and nature of a brand, and on the constant tests and development of the judicial and review practice.

The author believes that, against the background that the new Trademark Law has come into force, under the judicial policy of “enhancing the protection, drawing a clear distinction line, leaving enough space and creating a great environment”, and on the basis of following the original intent of legislation, the application of Article 10.1.8 of the Trademark Law will surely become an even more powerful support for creating a good environment in the trademark market.